This is a relatively new legal subject, so there isn’t much law out there. In December, 2011, a Pennsylvania federal court answered this question in the negative. In the case of Eagle v. Morgan, Linda Eagle, the founder of a company, Edcomm, had developed a significant LinkedIn presence closely connected to Edcomm. In 2010, Edcomm was purchased. In 2011, she was terminated and Edcomm took over her LinkedIn account. She sued Edcomm. Shortly thereafter, she regained control of her LinkedIn account and refused to return it to Edcomm. Edcomm counterclaimed against her in her lawsuit, contending that by regaining control of the LinkedIn account and refusing to return it to Edcomm, she had misappropriated Edcomm’s trade secrets. She moved to dismiss Edcomm’s misappropriation claim. With little analysis, the court dismissed the claim, stating that the LinkedIn contacts on the Eagle/Edcomm account were “generally known . . . or capable of being easily derived from public information.”

In March, 2012, a Colorado federal court came to a different conclusion. In Christou, et al. v. Beatport, LLC, a nightclub company sued an ex-employee for stealing the company’s MySpace “friends” list. The ex-employee moved to dismiss the lawsuit, arguing that a MySpace “friends” list couldn’t be a trade secret. The court denied the ex-employee’s motion, holding that a company’s MySpace profiles and friends list can be a trade secret because, online, a MySpace profile contains a lot more information than just the “friend’s” name. It gives the owner of the profile the “friend’s” personal information, including interests, preferences, and contact information that can have commercial value. It allows the “friend” to be contacted and advertised to. This information goes beyond what is publicly available. Duplicating all the information available from the “friends” list would be time-consuming and costly. The public can see the names of the company’s “friends” online, but the public does not have all the other information that the company gets by virtue of having these “friends.”

In September, 2014, another federal court held that LinkedIn contacts could be a trade secret. In Cellular Accessories For Less, Inc. v. Trinitas, LLC, a company sued an ex-employee who had left to form a competing company and taken his LinkedIn contacts with him. The ex-employee moved for dismissal of the lawsuit. The court denied his motion, holding that the LinkedIn contacts that he had developed while working for his former company could be the company’s trade secret. The company had encouraged the employee to develop LinkedIn contacts during the employment. The court said that the LinkedIn contacts may – or may not – have been viewable by other LinkedIn users; the ex-employee’s motion papers did not say whether the contacts were publicly viewable. Since they may not have been publicly viewable, they could be the company’s trade secrets.

Alleged “patent troll” strikes out for second time in its efforts to have the Vermont AG’s “unfair patent enforcement” lawsuit adjudicated in federal court.

In May 2013 the State of Vermont sued MPHJ Technology Investments, LLC for alleged consumer fraud arising from its letters sent to Vermont businesses claiming patent infringement. Since then, the parties have been disputing which court system the case should be heard in. The Vermont federal court has, once again, “remanded” the case against MPHJ back to Vermont state court.

In its most recent attempt to obtain federal jurisdiction, MPHJ argued that, after the State filed its original Complaint against MPHJ, Vermont passed its “Bad Faith Assertions of Patent Infringement” law (i.e., the “anti patent troll” law) and that the interim enactment of this law gave MPHJ new grounds for federal court jurisdiction. In response, the State and the federal court disagreed, pointing out that the State never attempted to incorporate that new law into its Complaint in this case.

Indeed, it is not clear that there would be federal jurisdiction even if the State had incorporated the new anti-troll law into its Complaint against MPHJ. The Jan. 12 order from Federal judge Sessions concludes this is a matter for state (and not federal) court because the State’s case is not about the validity of MPHJ’s patents (which would give rise to federal court jurisdiction), but, instead, only about the legality of MPHJ’s activities in seeking to get Vermont businesses to pay it licensing fees under Vermont consumer protection laws. As it did the first time (and lost), MPHJ might attempt to appeal this most recent order to the federal appeals court.

Last month, Google asked the Supreme Court to hear its appeal of an appeals court ruling that certain application program interfaces (APIs) are copyrightable. Oracle’s response is due in December, and the US Government may weigh in, so we may not know until January 2015 whether the Supreme Court will accept the case. I expect they will, primarily to deal with confusion amongst the various courts around the country on the legal points discussed below. The results will have significant ramifications on the use of program APIs without a license.

Background

In creating Android, Google copied 37 Java API packages that originated from Sun (now Oracle). Specifically, Google copied approximately 7000 lines of “declaring code” (the “calls”) for the packages in question. All the calls follow the same <java.package.class.method> command format. The actual code of the packages themselves (which you can think of as library code) was rewritten by Google.

The issue under consideration is simply this: are the calls protected by copyright? In general, copyright protects the expression of ideas, not the ideas themselves. So for example, in 1879, the Supreme Court ruled that while a ledger book for bookkeeping was copyrightable, the underlying method of accounting enabled by the book was not protected by copyright. With that as background, is declaring code copyrightable, given that its sole purpose is simply to issue commands to enable the package code? Aren’t such commands “ideas,” not protectable by copyright?

Prior Rulings

In 2012, a federal District Court in California ruled that such calls are NOT copyrightable, primarily because they constitute a “method of operation” of the underlying packages. The District Court based its ruling on the idea that if you want to make calls to the libraries in a manner compatible with Java, you have no choice but to use the exact same sequences of declaring code. In May 2014, a federal appeals court reversed that ruling, and found the declaring code copyrightable. Its main rationales were as follows:

Oracle could have written the sequences of declaring code many different ways;

The notion that users were “forced” to use the same sequences of declaring code to be compatible with Java is irrelevant to the issue of whether those sequences are protected by copyright. What matters is whether the creator of code, not the user of code, has few/no choices in how to write it. As noted above, the appeals court found Oracle could have written the code many different ways. In view of that finding, the appeals court determined that such code is in fact copyrightable; and

The most applicable previous court ruling on point (Lotus v. Borland, finding a menu tree of commands for operating the Lotus 1-2-3 spreadsheet program not copyrightable) is distinguishable, and not applicable here.

I think the appeals court decision is weakest on the last point. These are APIs - elaborate APIs, to be sure, but APIs nonetheless. Their sole function is to provide sequences of commands to operate the libraries. That’s all they do. That should matter in the copyrightability analysis.

Practical Considerations

While we’ll have to wait and see how the Supreme Court responds, here are some practical observations:

I continue to believe that simple menu commands (e.g., function calls invoking function X by using command Y) are NOT copyrightable, particularly if the name of the command is analogous to the function being invoked. In the Oracle v. Google case, the APIs are in fact sequences of code used to invoke functions, rather than simple commands. It seems to me that the more detailed and extensive the “declaring code” is relative to simple “declarative commands,” the more likely it is that such code will be found to be copyrightable, should the Supreme Court uphold the appeals court ruling.

Also, other information, materials, or code often included in API packages (such as test/verification code, or sample code) is likely to be copyrightable regardless of these recent decisions. So, it may be wise to first parse through exactly what is being proposed for use and exactly how it will be used, rather than relying on a simple characterization that it is (or is part of a package for) an “API.”

Given the unsettled state of the law, it may be wise to consult with an attorney before deciding to use APIs, let alone deciding to use verification or sample code that may be included in API packages.

What is Patentable?

In the US, we have a law (35 USC §101) that lays out what kinds of subject matter are eligible for patent protection. Under the law, which is pretty broad, any machine (like a smartphone), process (like how to make tires), article of manufacture (tires), or composition of matter (like toothpaste) is eligible for a patent grant. To be clear, you don’t get such a patent unless the smartphone etc. meets other requirements…like novelty (it’s the first one) and nonobviousness (its more than a straightforward tweak to existing technology). But this “subject matter” test is the first test any invention has to meet in order to obtain a patent. Think of the 110 meter high hurdles – you have to pass this first hurdle to have any chance of obtaining a patent.

Exceptions.

But this is the US, so over the years courts have added caveats to this broad list of eligible subject matter. A key caveat is that laws of nature, natural phenomena, and abstract ideas are not eligible for patents. Why do we have these exceptions? The general concern is that patents are granted in order to encourage progress in science and technology. That progress is predicated on applying laws of nature or abstract ideas to solve problems. If somebody can get a patent on, e.g., an abstract idea, any future use of that idea could be precluded….which would frustrate, rather than promote, the very progress the patent system was set up to encourage.

This Decision.

The court looks at prior caselaw and concludes the test to be applied is this:

First, do the claims recite an abstract idea?

Second, is there other structure/function in the claims that render the claimed invention “significantly more” than the abstract idea?

Let’s look at the claim in question here (paraphrasing a tad):

a “shadow credit record and a shadow debit record” that is

held independently by a supervisory institution from the exchange institutions,

where “the supervisory institution adjust[s] each respective party’s shadow credit record or shadow debit record, allowing only these transactions that do not result in the value of the shadow debit record being less than the value of the shadow credit record at any time, each said adjustment taking place in chronological order,”

and where “at the end-of-day…the exchange institutions…exchange credits or debits to the credit record and debit record of the respective parties in accordance with the adjustments… the credits and debits being irrevocable, time invariant obligations placed on the exchange institutions.” (based on the Opinion, Note 2)

Here’s the $64K question – do you think this claim really, truly calls for an “abstract idea?” Here’s why the court thinks it does:

On their face, the claims before us are drawn to….the concept of intermediated settlement..[which] is “a fundamental economic practice long prevalent in our system of commerce.” Opinion, Page 9

Three Problems.

First, what’s this “concept” discussion about? When you apply for patents…and later, when you enforce them…every single word in the claims counts. You don’t get to ignore words in the claim at any point of the process. So how is it right, or fair, that for these purposes courts get to ignore the literal words of the claim, and find they really cover an abstract idea because they are “drawn to [a] concept?”

What’s so “abstract” about this claim? It does not simply say “I claim intermediated settlement.” That might be a pithy way of expressing an opinion on the “essence” of what is claimed….but that is not what the claim actually says. Seems to me there could be other ways of practicing “intermediate settlement” without infringing this claim. The court did not say one way or the other. More on that later.

Second, what’s this analysis of prior art (“a fundamental economic practice long prevalent in our system of commerce”) doing in what is supposed to be an analysis of eligible subject matter? Remember our hurdle analogy….here the court talks about the second hurdle when we have not even crossed the first. More to the point, by mashing together subject matter and novelty analyses, has Alice really gotten a fair shake at arguing either one? For the purpose of deciding what is eligible to obtain a patent, it should not matter whether an invention is as old as the hills or as fresh as a daisy. That should be a separate analysis.

Third, under the second part of the analysis, the Court discards limitations under which the method is implemented on a computer as a “wholly generic computer implementation” which “is not generally the sort of additional feature” that will be the lynchpin of patentability. So once again, we’re parsing claims, considering words in isolation.

OK……So, Now What?

Here, the court was following its precedent, so the solution is not yet another court case. We need Congress to clarify the law here to deal with this line of decisions. In pertinent part I think the law should say

You have to consider all the words in the claim in figuring out whether an invention is abstract. No “essence,” “concept,” “boiling down,” etc. All the words count.

An invention can only be “abstract” if that is true regardless of whether it is as old as the hills or as fresh as a daisy. In other words, how it compares to prior work should be irrelevant to this analysis.

Even if we decide for some reason we must preserve this notion of boiling claims down to their base “concepts” for the purpose of this analysis, to me a claim should only be fatally “abstract” if and only if the actual claims as a whole are so basic and so broad such that there is no practical way of using the “general idea” without infringing the claim. Then, and only then, might it make sense to forestall further analysis.

I don’t think that is the case here…I don’t think these specific claims as a whole recite the one and only way to conduct intermediated settlement. The way it is now, courts look to the claim language only to see if there is anything left that somehow “salvages” an abstract idea. But that methodology does not work either…it again does not consider the claims as a whole. It simply becomes another characterization exercise that is at best loosely based on the claims.

This whole line of court cases on what is an “abstract idea” has just gotten out of hand. This decision, and others like it, sacrifices fairness for the illusion of clarity.

On Thursday June 12, Elon Musk, CEO of Tesla Moters, posted a blog post that said “…Tesla will not initiate patent lawsuits against anyone who, in good faith, wants to use our technology.” At first glance, a good thing. It is certainly better than having no such pledge. But before folks gleefully download all of Tesla’s patents and infringe at will, a few words of caution.

First, to point out the obvious, Mr. Musk says TESLA will not INITIATE suits. Tesla seems to be reserving the right to file counterclaims under its patents if another party sues them. Indeed, looking back over similar patent pledges from IBM, Microsoft, and others, you’ll see that “defense” notion expressed, albeit in different forms. There’s absolutely nothing wrong with that. So don’t think Tesla has somehow unilaterally disarmed itself. They’ve said they won’t be the first party to launch the patent missiles; they’ve reserved the right to be the second.

But note also, this pledge applies to Tesla, and only Tesla. If the patents are assigned by Tesla to some other party, this obligation would arguably no longer apply, because it only applies to Tesla. While subsequent patent assignees typically take title subject to any licenses that have been granted by Tesla, in general that is not the case when what has been granted is a covenant not to sue, because that is personal to Tesla, the party granting the covenant. And subsequent owners don’t typically take title subject to non-contractual covenants, such as this. Maybe if Tesla ever sold these patents, they’d force the assignee to abide by the pledge. Maybe. The point is, I see nothing that would force them to do so.

Another thing–to quote from the post:

At Tesla, however, we felt compelled to create patents out of concern that the big car companies would copy our technology and then use their massive manufacturing, sales and marketing power to overwhelm Tesla. We couldn’t have been more wrong… Our true competition is not the small trickle of non-Tesla electric cars being produced, but rather the enormous flood of gasoline cars pouring out of the world’s factories every day.

…which sort of makes you wonder, what does Mr. Musk truly mean by “….anyone who, in good faith, wants to use our technology”? On its face, it suggests that if you are making a “bad faith” use of Tesla technology, or if (good or bad) you are not using Tesla “technology,” the covenant does not apply. So…what are the realistic situations where the covenant could not apply?

Maybe it’s this: if you are using a Tesla patent on a “gasoline car”….which Mr. Musk identifies as Tesla’s “true competition”…. is that a “good faith” use of Tesla “technology?” Or, given that gasoline cars are Tesla’s “true competition,” could an argument be made that such a use is NOT a “good faith” use? And/or, it is not really a use of Tesla “technology?” In the blog post Mr. Musk emphasizes that Tesla is all about electric-powered vehicles. That sure isn’t your Ford F-350. While it is quite possible Mr. Musk did not intend to cut such fine hairs, if I were Ford I’d hesitate before committing big money on use of a technology a Tesla patent reads on, if the use is to further “the enormous flood of gasoline cars…”

Finally, bear with me making a wonkish patent attorney point. The Tesla pledge only applies to Tesla patents. It does not apply to other patents that might be infringed if you implement a technology a Tesla patent reads on. Just because a Tesla patent reads on a technology does not mean that other patents won’t. Just because Tesla obtained a patent does not mean that there is no possibility of other, older patents being out there that apply to Tesla technologies and have broader claims. So Tesla has not somehow created a “patent free zone” that applies to patents they do not own. I wouldn’t expect them to. You shouldn’t either.

Whenever we view content on the Internet, our web browsers (Internet Explorer or Firefox, for most folks) make temporary copies of that content on our computers. Amongst the rights reserved by copyright holders is the right to prevent others from making copies. So do those copies constitute copyright infringement? On Thursday, the European Court of Justice ruled that such copies do NOT constitute an infringement.

An agency that licenses newspaper content (the NLA) sued the Melwater group, arguing that Melwater’s online “flash news” service that linked to newspaper articles required a license from NLA. In Europe, there are statutes that say a copy is not infringing if (paraphrasing) it is temporary, if it is an essential part of a transmission through a network, and if the copy has “no independent economic significance.” The Court ruled that the copies made in the course of viewing web content (temporary copies that appear on the computer screen, and are made in the computer’s temporary memory) are temporary, and are reasonably required in order to view web content.

But don’t temporary web copies have value? So how can they have “no independent economic significance?” The court here says this language is intended to ensure that the temporary copies “do not conflict with a normal exploitation of the work and do not unreasonably prejudice the legitimate interests of the rights holders.” Here, the court observes that the content would not be searchable in the first place unless the copyright owner allowed the content to be searchable; to quote:

In this connection, it must be pointed out that the works are made available to internet users by the publishers of the websites, those publishers being required, under Article 3(1) of Directive 2001/29, to obtain authorisation from the copyright holders concerned, since that making available constitutes a communication to the public within the meaning of that article.

On that basis, the court concluded that the newspapers’ rights have been protected. Given that, and given that web browsing is within the normal scope of uses a newspaper would anticipate in granting authorization to website publishers, the court concluded these copies fell under the statute’s exceptions that allow making temporary copies without a license.

What does this mean?

We’ve had similar outcomes in US courts; this is the first affirmation in Europe of a similar outcome, albeit under different legal principles. So, when licensing content for web posting, content owners should anticipate that in both Europe and the US, they will not be able to prevent users from searching that content. In a way, you could argue that this is simply an example of the law catching up to the reality of web content. But it is an important affirmation nonetheless. At the same time, the court strikes a balance here….web copies would not be authorized if the original content provider had not posted the work online or granted someone else a license to do so. And the decision only applies to temporary copies.

So…..downloads are not affected. Content that was put on the web without authorization is not affected.

Last year a California porn studio, Caballero Video, paid dubious homage to Ben & Jerry’s® (“B&J”) when it launched a “Ben & Cherry’s” film series. Even the less explicit titles in the series, such as BOSTON CREAM THIGH and HAIRY GARCIA, (a la B&J’s BOSTON CREAM PIE and CHERRY GARCIA®), evidence an intention to evoke B&J.

Caballero had fun with the B&J trade dress as well. It substituted “PORNO’S FINEST” for VERMONT’S FINEST®, printing it in the familiar B&J stylized font:

Even B&J’s bucolic container theme –

– provided inspiration for Ben & Cherry’s print material, which featured naked men and women in lieu of naked cows, on a hazy background of wafting clouds. The writer is loath to reproduce it here; think Dante’s Second Circle of Hell.

B&J, no stranger to puns, (IMAGINE WHIRLED PEACE® and KARAMEL SUTRA® are personal favorites), was not amused and sued Caballero in the Southern District of New York. In the absence of a federal cause of action for really bad puns, it claimed trademark and trade dress infringement, dilution and tarnishment. Ben & Jerry’s Homemade, Inc. and Conopco, Inc. v. Rodax Distributors, Inc. d/b/a Caballero Video et al., 1:2-cv-6734-LAK (SDNY 9/6/12.) Faster than it takes a pint of CHUBBY HUBBY® to melt, the Court issued a temporary restraining order requiring the recall and destruction of all DVDs and related materials in the Ben & Cherry’s series. Caballero mounted no defense, and the case concluded with a consent judgment this past summer.

“[A]ny conduct that is of such nature as to fairly reek with unfairness and a callous indifference to the damage that might occur to others from the action taken by it will naturally be examined most carefully… to determine whether such conduct falls afoul of any established legal principles.”

306 F. 2d at 437. The Judge* conveniently found himself “… not reluctant to conclude that what is here morally reprehensible is also legally impermissible ” due to “the peculiarly unwholesome association of ideas when the word ‘bugs’ was substituted for the word ‘Bud,’ referring to a food [sic] product.” Rather an over-the-top reaction to what some might characterize as parody.

More than half a century later but only a few years before B&J v. Rodax, the Fourth Circuit took a more indulgent view of corny puns, in Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC et al., 507 F.3d 252 (4th Cir. 2007). The defendant sold plush pet toys with names tweaking famous luxury brands — CHEWY VUITON, CHEWNEL NO. 5 and SNIFFANY & CO.. Vuitton couldn’t take a joke, contending that this furry little ten-dollar CHEWY VUITON handbag would confuse the public and tarnish one of Vuitton’s most successful designs:

Why, then, should Ben & Cherry’s HAIRY GARCIA for porn be deemed an infringement, but not CHEWY VUITON for a dog toys? Is it because HAIRY GARCIA “fairly reeks,” while CHEWY VUITON is just cute? Surely not, but the 4th Circuit’s analysis of whether CHEWY VUITON created a likelihood of confusion with Vuitton’s expensive bags was perhaps not the best approach either.

Surely a far less tortured way to judge the permissibility of marks such as CHEWY VUITON, the “bugs” slogan and BEN & CHERRY’S is simply to ask whether the ostensibly infringing mark and trade dress comprise a legitimate parody protected by the First Amendment. The unequivocal definition of parody minimizes subjective judgments. Thus, a pun on a famous mark is not parody per se. To be protectable parody, the pun and its graphic equivalent, whether brilliant or sophomoric, whether amusing or salacious, must go beyond mere wordplay. The parodied product or service must be the very target of the pun. Only then is the allegedly infringing mark or trade dress speech warranting protection. When one asks whether the claimed infringement is mere wordplay, or a legitimate commentary on the imitated product and its owner, the simplicity and rightness of the parody analysis crystallizes. IA court’s reasoning need not deteriorate into tortuous likelihood-of-confusion rationales to fit an I-know-it-when-I see-it prejudgment.

Thus, CHEWY VUITON, CHEWNEL NO. 5 and SNIFFANY & CO., however unsubtle – or perhaps because of their very obviousness – amusingly puncture the hauteur of pricey status symbols. Parodying a must-have Vuitton bag with a deliberately look-alike toy, one that a dog will inevitably destroy with its owner’s blessing, is a way of saying that the emperor has no clothes. As such, it is a form of speech warranting protection. In contrast, BEN & CHERRY’S, HAIRY GARCIA, 7 LAY-HER BAR et al., do absolutely nothing to deflate B&J and its ice cream, just as “Where there’s life… there’s bugs” does not target Budweiser beer. Simply riding on the coattails of marks that became successful due to their owners investment in them is not parody, and is actionable.

__________

* Despite C. J. Tuttle’s entomophobia, he had no anthrophobic prejudices. In the years after Brown v. Board of Education, he was a stern defender of civil liberties, ruling against segregationists and racist voter registrars in the South.

MPHJ stands accused of a nationwide program of sending hundreds or thousands of threatening letters to businesses accusing them of using technology, without a license, under patents acquired by MPHJ — classic patent troll behavior. Specifically, these “cease and desist” letters assert that by using office scanners, without a license to do so from MPHJ, the businesses are infringing MPHJ’s patents. More specifically, and ominously, in these letters MPHJ demands that the businesses pay MPHJ a licensing fee based on the number of employees in the businesses, and tells them that a patent infringement lawsuit against them is imminent if they don’t pay the fees. Several commentators have written about this “patent troll” behavior by MPHJ:

The Vermont lawsuit against MPHJ, filed in May, 2013, was the first state patent litigation case against that company for patent troll behavior. In the lawsuit, the Vermont Attorney General alleges that MPHJ has engaged in unfair and deceptive acts in violation of Vermont consumer protection law by sending letters to many small businesses and non-profit organizations in Vermont: (i) accusing them of infringing on MPHJ’s patents by scanning documents into email attachments; (ii) demanding that they pay MPHJ a licensing fee; (iii) threatening patent litigation if the businesses do not pay the licensing fees; but (iv) without ever intending to actually sue if the businesses do not pay. In other words, the Vermont case accuses MPHJ of engaging in a scheme to extort money out of businesses by frightening them with the false threat of expensive patent litigation. Here’s a copy of the legal complaint filed by the Vermont AG.

Meanwhile, the Nebraska and Minnesota Attorney General’s offices have gone after MPHJ as well. In July, the Nebraska Attorney General indicated that it is investigating MPHJ and issued a cease and desist letter to MPHJ alleging that it was engaging in false and deceptive conduct in Nebraska, in violation of the Nebraska Consumer Protection Act, by pursuing Nebraska businesses.

The Minnesota Attorney General’s office just announced that, after investigation, it has reached a settlement with MPHJ whereby MPHJ will no longer be allowed to send out “cease and desist” letters in that state. According to a press release issued by the Attorney General’s office, MPHJ was engaging in the same kind of behavior in Minnesota that is the subject of the Vermont Attorney General’s lawsuit. The Minnesota Attorney General began investigating after receiving complaints from Minnesota small businesses that had been targeted by MPHJ.

As for MPHJ, the Vermont patent litigation lawsuit against it is still pending, and the parties are currently fighting over whether the case should be in state or federal court. The merits of the case have not yet been addressed.

We will keep you posted on further developments concerning the Vermont lawsuit and other issues involving MPHJ, as well as any activity under Vermont’s new patent troll law.

This article is the next in a series of posts discussing IP issues surrounding 3D printing. As discussed in the last post, some types of 3D printing technology have become affordable enough for home use. This has led to increased concerns that the printers’ capability to make “perfect replicas” will lead to widespread IP infringement that, due to the distributed nature of the infringement, may be difficult for IP rights holders to prevent. The concern for increased ease of infringement seems most clear for IP protecting aesthetic and artistic creations since a 3D printer can make something that, from outward appearances, is a nearly identical match to the original. But infringement concerns are less clear for IP protecting functional creations (the domain of utility patents). Instead, in at least the near term, 3D printing may represent more of an opportunity for innovation, with the potential to revolutionize myriad technology areas, than a concern for enabling infringement of existing functional designs.

3D printing technology, or “additive manufacturing,” has been around since at least the late ’70s. The term 3D printing is very broad, encompassing many different technologies, the common characteristic being devices that build a three dimensional object by sequentially adding material, layer by layer, to create the final product. The printers that have become affordable enough for home use pass a polymer or thin metal wire through a nozzle that melts the material, forming small beads or strips of material that are precisely placed on a working surface. Higher powered applications use lasers or electron beams to either sinter or completely melt powder-forms of a working material. There are, therefore, significant limitations on what can be made with a home use printer. The material options are mostly limited to polymers that will work with the printer’s small, lower powered nozzle, meaning certain materials that have specific heat transfer or structural properties cannot be used. Also, the resulting product will have a layered, non-homogeneous structure that will further limit the material properties of the final product.

These limitations on home-use 3D printers suggest that, in at least the near term, they will not enable widespread infringement of utility patents. For example, for engineered products that are designed and constructed to perform some useful function, the materials chosen to construct the product are crucially important. The relatively low-cost printers available for home use are not capable of printing many of the components of higher-end engineered products that require, for example, specific structural and heat transfer properties. Thus, while the 3D printing technology available to consumers has significantly reduced the barrier for copying aesthetic features of artwork, the barrier has not been lowered as greatly for copying of engineered, functional products. There are, of course, many patented consumer products made from plastic that have less stringent performance requirements. For these types of products, today’s home use 3D printers may pose more of a patent infringement concern.

Rather than posing a dire risk of widespread utility patent infringement, 3D printing seems to represent more of an opportunity for innovation. This is evidenced by the recent “gold rush for patents” covering 3D printer technology and a variety of analysts, including those from Goldman Sachs, The Economist, CNBC, and MIT Technology Review, identifying 3D printing as a disruptive technology that will impact many technology areas in the near term. General Electric has made significant investments in 3D printing technology this year, with the stated goal of fundamentally changing the manufacturing of highly engineered components such as turbine blades, with the potential to cut production times and costs in half.

Outside of the mechanical arena, 3D printing technology may completely change healthcare and biochemical engineering. Bio printers are being developed that use “bio ink” to “print” living human cells to form human tissue. These Bio printers are being used to create test cells for drug development, reducing the time and costs of new drug development. And, one day, bio printers may be used to print human veins and arteries and entire organs that could be used for organ transplants. 3D printers are also being used to make medical devices that can be custom designed to specifically fit the patient, such as orthopedic and dental implants and hearing aids.

The potential applications for this technology and the associated challenges are mind-boggling. In terms of the impact on intellectual property protection of inventions, 3D printing seems poised to have a much greater impact on the patent-acquisition side of the equation, as companies rush to improve their technologies, than on the enforcement side, due to individual consumers and hobbyists printing 3D objects at home.

Of course, there still is some near-term concern of infringement of patents covering simpler patented products made primarily from plastic. Stay tuned for additional posts on 3D printing, which will include discussions of enforcement issues for those utility patents that are infringed, and infringement of design patents, which protect the aesthetic aspects of a product.

Why a new Trademark Clearinghouse?

In June of last year, the Internet Corporation for Assigned Names and Numbers (ICANN) announced it had received nearly 2,000 applications for approximately 1,400 unique new gTLDs or “strings,” for example .app, .llc, .auto, .realty, and .law. This is a huge number compared to the 22 gTLDs that currently exist in Latin-based scripts. As discussed in our recent webinar Domain Names and the New gTLDs: Protecting Your Trademarks Online, the introduction of new gTLDs presents significant enforcement issues for trademark owners because it will significantly increase the number of gTLDs on the Internet.

To assist trademark owners with the task of enforcement, ICANN has now launched a Trademark Clearinghouse (TMCH). This TMCH allows brand owners to submit their trademark data into one centralized database, prior to and during the launch of new gTLDs.

Benefits of using the TMCH

Entering your trademarks in the TMCH has significant benefits:

Sunrise Registration – Every new gTLD registry will be required to interface with the TMCH database, to provide trademark protection services to brand owners by enabling “Sunrise Registration” services in each new gTLD registry. In other words, if your trademark is registered with the TMCH, you are much more likely to be able to register the corresponding domain name in a new gTLD.

Trademark Claims Services – New gTLD registries will also be required to provide “Trademark Claims” services, including notification of a trademark owner if a third party makes a conflicting domain registration. This service helps reduce the need to monitor new gTLD domain name registrations for potential cybersquatting issues.

URS Proceedings – Registration with the TMCH helps streamline Uniform Rapid Suspension (“URS”) System proceedings, which can be used to challenge specific domain name registrations in the new gTLDs. Because the TMCH serves the function of authenticating trademark information and verifying trademark rights information, a trademark owner involved in a URS proceeding can upload proof of TMCH validation, avoiding the need to submit other evidence showing registration and use of its mark.

With limited exceptions, all nationally registered marks from all jurisdictions, marks validated through a court of law or other judicial proceeding, and marks protected by statute or treaty are now eligible for entry in the TMCH.